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The draft examination guide says that evidence of five years' use will be insufficient to overcome a refusal on the basis that a repeating pattern mark is not inherently distinctive; actual evidence will always be required. The guide cites to TMEP 1212.05(a) which states: "For matter that is not inherently distinctive because of its nature (e.g., nondistinctive product design, overall color of a product, mere ornamentation,
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The draft examination guide says that evidence of five years' use will be insufficient to overcome a refusal on the basis that a repeating pattern mark is not inherently distinctive; actual evidence will always be required. The guide cites to TMEP 1212.05(a) which states: "For matter that is not inherently distinctive because of its nature (e.g., nondistinctive product design, overall color of a product, mere ornamentation, and sounds for goods that make the sound in their normal course of operation), evidence of five years’ use is not sufficient to show acquired distinctiveness." It appears that non-inherently distinctive repeating pattern marks will now be added to this category, but I do not think that is appropriate, especially when the repeating pattern mark is not used in an ornamental fashion. This should not be an absolute rule.

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Repeating Pattern Marks Registration
December 18, 2014 Comments and Suggestions by
J. Thomas McCarthy, Senior Professor
University of an Francisco
Founding Director, McCarthy Institute of IP
jtmccarthy2@comcast.net
Comments on Draft of December 11, 2014 for Examination Guide for Repeating Patterns
The guideline conflates the two different requirements of whether a designation serves as a trademark at all and whether
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Repeating Pattern Marks Registration

December 18, 2014 Comments and Suggestions by

J. Thomas McCarthy, Senior Professor

University of an Francisco

Founding Director, McCarthy Institute of IP

jtmccarthy2@comcast.net

Comments on Draft of December 11, 2014 for Examination Guide for Repeating Patterns

The guideline conflates the two different requirements of whether a designation serves as a trademark at all and whether it is inherently distinctive. For example:

“However, because of the ornamental and typically nondistinctive nature of repeating patterns, consumers often do not perceive these patterns as source indicators, in which case they may not be registered on the Principal Register without proof of acquired distinctiveness.”

The qualifications of “often” and “in which case” admit the possibility of a repeating pattern which is inherently distinctive. I think the proposed guideline becomes unwieldy because it admits the possibility that a repeating pattern could fit in the category of being inherently distinctive. I recommend that the guideline state clearly that a repeating pattern should never be placed on the Principal Register unless acquired distinctiveness has been shown to the satisfaction of the Examiner.

Evidence that the pattern serves as a mark is inevitably the same kind of evidence as will also prove acquired distinctiveness under §2(f) (secondary meaning). I see no advantage in complicating the rule by opening the door to the possibility of an applicant for a repeating pattern who submits evidence sufficient to prove that it is likely to be perceived as a mark, yet at the same time does not need to prove secondary meaning. The one “stone” of evidence can kill “two birds” (mark status and acquired distinctiveness). For example, robust “look for” evidence will prove both elements at once.

The hypothetical example in Part B was artificially created to try to come up with a repeating pattern that qualified as an “inherently distinctive” example. In my view, this example should not be in that category. The “anthropomorphic registration symbol” as a single image might itself be inherently distinctive, but its mere repetition on a purse does not magically transform the repetition as a whole into an inherently distinctive mark – to the contrary, the repetitive pattern would likely be perceived as mere “wallpaper” or background ornamentation, not as an identifying trademark for purses. If that seller wants a registration, it should register a single image and it could then use that registration to sue a junior user who repeats the image in a repeating pattern on a purse or related goods.

A repeating pattern should be placed in the same category as similar designations that the courts and the Board have held always require proof of acquired distinctiveness and cannot be placed in the inherently distinctive classification. The Supreme Court has held that both a single color of a product and trade dress that is the design of a product can never be inherently distinctive and can only be registered on a showing of secondary meaning. Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 163, 34 USPQ2d 1161 (1995) (“We cannot find in the basic objectives of trademark law any obvious theoretical objection to the use of color alone as a trademark, where that color has attained ‘secondary meaning’ and therefore identifies and distinguishes a particular brand (and thus indicates its ‘source.’”) and Wal-Mart Stores, Inc. v. Samara Brothers, 529 U.S. 205, 212, 54 USPQ2d 1065, (2000) (“[Product] design, like color, is not inherently distinctive.”) See McCarthy, Trademarks & Unfair Competition, §18:12.50 (4th ed.)

The T.T.A.B. followed the Supreme Court's rule regarding color and product design to hold that sounds for goods that emit a sound in the normal course of operation cannot be inherently distinctive: registration can be obtained only on proof of the acquisition of a secondary meaning under Lanham Act §2(f). In re Vertex Group LLC, 89 U.S.P.Q.2d 1694, 2009 WL 398091 (T.T.A.B. 2009). Similarly, the Trademark Board has said that because flavor is usually perceived as a characteristic of the goods, not as a source indicator, flavors, like single colors and scents, can never be inherently distinctive. Thus, flavor requires proof of secondary meaning - acquired distinctiveness. In re N.V. Organon, 79 U.S.P.Q.2d 1639, 2006 WL 1723556 (T.T.A.B. 2006) (“Because flavor is generally seen as a characteristic of the goods, rather than as a trademark, a flavor, just as in the cases of color and scent, can never be inherently distinctive.”)

Repeating pattern designations should be placed in the same category as single colors, product designs, product sounds and flavors. Such a rule would be more simple and easier for Examiners to follow.

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The Lanham Act states:
"§ 2 (15 U.S.C. § 1052). Trademarks registrable on the principal register; concurrent registration
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—
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(d) Consists of or comprises a mark which so resembles a mark
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No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

* * *

(d) Consists of or comprises a mark which so resembles a mark registered in the Patent and

Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive . . ."

Some marks are not registered in the USPTO although they have been previously used in the United States and are not abandoned - - it may be a mark protected by common law or registered in a state, or it may be a trade name which can not be registered in the USPTO. The Applicant must verify that it has the absolute right to use the mark. But the Lanham Act specifically says that such marks may not be registered with the USPTO

However, Section 1207.03 of the Trademark Manual of Examining Procedure provides with respect to “Marks Previously Used in United States but Not Registered” that:

"As a basis for refusal, §2(d) refers not only to registered marks but also to 'a mark or trade name previously used in the United States by another and not abandoned.' Refusal on the basis of an unregistered mark or trade name has sometimes been referred to as refusal on the basis of a 'known mark.' This provision is not applied in ex parte examination because of the practical difficulties with which an examining attorney is faced in locating “previously used” marks, and determining whether anyone has rights in them and whether they are “not abandoned."

I recommend the the MTEP be changed so that the Examining Attorney must do an "online" search (for example, a Google search) to see if there are any relevant marks NOT registered or filed with the USPTO. If one or more relevant marks are found by the Examining Attorney by such an online search, the Examining Attorney can place the "burden of persuasion" on the Applicant to show the mark is no longer used or that it will not cause confusion, cause a mistake or deceive. If this approach is adopted, it will better protect the legal rights of those who have not registered with the USPTO and the extra effort required of the Examining Attorney will be minimal.

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The proposed requirement for relaxation of the currently strict rules against registration of gTLDs makes sense. The AIPLA comments that special rules for registration of gTLDs as trademarks or servicemarks are not needed. The proposed Examination Guideline would allow registration of gTLDs upon proof of :
(a) prior registration for an identical mark for the same services or goods,
(b) proof that consumers would associated
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The proposed requirement for relaxation of the currently strict rules against registration of gTLDs makes sense. The AIPLA comments that special rules for registration of gTLDs as trademarks or servicemarks are not needed. The proposed Examination Guideline would allow registration of gTLDs upon proof of :

(a) prior registration for an identical mark for the same services or goods,

(b) proof that consumers would associated the gTLD with the prior registration as to source, and (c) proof of a domain registry agreement with ICANN for the gTLD.

I support this guideline for the following reasons:

1) Ambiguity as regards meaning of “generic”, There is inherent ambiguity due to the difference in meaning of the term "generic" with respect to trademarks/servicemarks and "generic" as respects TLDs. Since this guide is for examination of an application for trademark or servicemark registration of a "generic" TLD, use of the guide to resolve the ambiguity in meaning of "generic" is important to avoid consumer confusion. The introductory part of the guide attempts to do that by reference to the ICANN explanation of gTLDs. I think the guide needs to clearly note the ambiguity and directly address the ambiguity. One way is to simply state that "In view of the use of "generic" in the term gTLD, to avoid consumer confusion, a gTLD must be presumed to be, as it is named, "generic" for trademark purposes until proven otherwise." The guide explains proof that would show a generic TLD not to be "generic" for trademark and servicemark purposes, despite being so named.

2) Distinctiveness concerns: The existence of a prior registration, should be stated not as a mandatory requirement but rather as being prima facie proof of distinctiveness for domain registry services similar to the ID of that registration, so that merely adding "dot" in front should be, unless the Examining attorney can show otherwise, considered as retaining the distinctiveness. [e.g., COKE should be considered proven distinctive if a registration for COKE exists for the same goods or services for which domain registry services are in the ID of an application to register the gTLD]. The negative, however, is not true. That is, the absence of a registration for COKE for any particular goods or services should not prevent Coca Cola Company from registering .COKE for domain registry services. Coca Cola Company should be able (indeed, the only one able) to register ".COKE" for "domain registry services" related to any goods or services, provided of course Coca Cola Company uses .COKE for such services. The AIPLA makes a good point that no special rules are really needed as regards descriptiveness issue. If the applicant or registrant does not have an active pertinent ICANN domain registry services agreement ("PIDRSA" below) [i.e., one for domain registry services for the gTLD for the ID of the servicemark/trademark application/registration] for a gTLD, it would be a deception to allow the registration of that gTLD as a mark at the USPTO. This is because, in the USA, trademark and servicemark rights derive primarily from use not registration, so the public can justifiably assume that a trademark or servicemark registration for a gTLD means that there is an active PIRDSA. To avoid deception of the public, not only should a PIDRSA be required for registration, it should be a requirement for maintenance of the registration. That is, there should be an affirmative duty upon the registrant to promptly cancel the registration if the registrant ceases to have a PIDRSA, or an affirmative duty to promptly notify the USPTO of the non-existence of a PIDRSA coupled with a prompt automatic cancellation of the registration.

3. Deceptiveness Concerns: The main point of this comment is that distinctiveness is not the only issue. There is a deceptiveness issue. Trademark and servicemark rights in the US arise primarily from use. Use of a gTLD requires a PIDRSA (Pertinent ICANN Domain Registry Services Agreement), that is an agreement with ICANN permitting domain registry services with respect to the gTLD for the goods and services in the ID of the pertinent application or registration. Therefore, the public can rightly assume that a trademark or servicemark registrant has the PIDRSA required. If not, the application should be rejected and/or the registration cancelled. There should be an affirmative duty upon applicants and registrants to withdraw/cancel any servicemark/trademark application/registration for the gTLD promptly upon no longer having a PIDRSA. There should also be a duty upon the USPTO to sua sponte cancel an application/registration upon both (a) learning of the non-existence of a PIDRSA, whether via ICANN, applicant/registrant or the public and (b) verifying with ICANN such non-existence. Anything less would lead to possible mischief, fraud, or deception. no-PIDRSA notice.